NH Legal Perspective: Redskins' 1st loss of season might be its federal trademarks

By DOUGLAS G. VERGEShareholder, Intellectual PropertyGroup

Over the past several decades, various institutions, including colleges and high schools, have abandoned names, trademarks and logos that contain references to Native Americans. New Hampshire's own Dartmouth College was among the earliest of such institutions, abandoning the name "Indians" for its athletic teams. Many others have followed over the years, deciding that Native Americans might find such names, logos or trademarks derogatory or disparaging.

One holdout is the Washington Redskins. Despite public calls for the team to drop the name and even attempts by Native Americans to cancel federal trademark registrations of the "Redskins" term, the Washington Redskins have, up until now, retained the legal right to use the federally registered trademark "Redskins.''

All of that might change after a June 18 decision by the United States Patent and Trademark Office Trademark Trial and Appeal Board (TTAB) to cancel the team's registrations containing the term "Redskins." In its 177-page decision, the TTAB concluded that the term was disparaging to Native Americans and thus could not be a federally registered trademark.

The petitioners were five Native Americans. They brought the cancellation proceeding under a section of the federal trademark law that prohibits registration of marks that may disparage persons or bring them into "contempt" or "disrepute."

To evaluate the disparagement claim, the TTAB followed a two-step process. It first examined what "Redskins" means and concluded that even though the term referred to the professional football team, "the evidence overwhelmingly supports a determination that the term 'Redskins' as it appears in the marks retains the meaning Native American." The TTAB then examined the second question: "Was the meaning of the (Redskins) marks, at the times of the registrations, one that may have disparaged Native Americans?"

The Native American petitioners asserted that "Redskins" is a racial slur. The team argued that the use was an honorable one in connection with professional football services.

The TTAB made it clear that disparagement has to be viewed from the perspective of the group or community to whom the trademark refers and not from the perspective of the general public. On that question, the team introduced evidence that some in the Native American community did not find the term "Redskin" disparaging when it was used in connection with professional football.

The TTAB was not convinced, concluding that "while this may reveal differing opinions within the community, it does not negate the opinions of those who find it disparaging."

Because the evidence showed a substantial portion of the Native American population found the term disparaging, the TTAB canceled the federal registrations for the term "Redskins." The decision was not unanimous, as one of the three-member panel dissented, contending that there was insufficient evidence of disparagement at the time the registrations were issued.

While the TTAB has a right to cancel federal trademark registrations, it does not have authority to prevent use of the marks. Its decision does not prevent the Washington Redskins from continuing to use the "Redskins" term. Under the "common law" (judge-made law from court decisions), the owner of a trademark acquires rights in that mark simply by using it in connection with specific goods and services. The TTAB's decision is significant, however, because a federal trademark registration affords certain benefits not available under the common law.

For example, the rights of the owner of a federal trademark registration are superior nationwide to those who begin using the mark for similar goods or services after the federal trademark application has been filed (provided that a registration ultimately is issued). The federal registration also affords the owner certain presumptions of validity of the mark and ownership of the mark, which may provide an advantage in litigation concerning the mark. A federal registration also becomes incontestable to certain challenges after a period of five years, provided that an affidavit of incontestability is filed with the USPTO.

At present, it appears the team has no intention of dropping the name and is planning an appeal of the TTAB's decision. Only time will tell whether the impact of the TTAB decision, if supported by the public sentiment, will result in the Washington Redskins becoming the Washington (something else).

NH Legal Perspective is a bi-weekly column sponsored by Sheehan Phinney Bass + Green PA. This column does not provide legal advice. We recommend that you consult an attorney for specific guidance on legal questions.